Appeal No. 2000-1901
Application 08/506,032
answer that "[s]ince appellant has [sic, an] unreasonable number of
claims in the file, it is a burden on the examiner to address all
single claims, but the examiner has attempted to address all the
independent claims." The examiner's "attempt" to address all the
independent claims has, as noted above, been found to not set forth
a prima facie case of obviousness within 35 U.S.C. § 103.
Similarly, it is apparent that, because of the number of claims on
appeal, the examiner has not addressed all the dependent claims
because "it is a burden on the examiner to address all single
claims." We therefore conclude that the examiner has failed to set
forth a prima facie case of obviousness as to all the dependent
claims on appeal as well.
The examiner is free to reinstitute any rejections under
35 U.S.C. § 103 on the basis of the presently applied or any new,
different prior art. In any event, for each reference relied on
in each rejection, the PTO's policy is for the examiner to
compare the rejected claims feature-by-feature or limitation-by-
limitation with each of the references relied upon in the
rejection. This comparison should map the language of the claims
to the specific page number, column number, line number, drawing
number, drawing reference number, and/or quotation from each
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